Central Valley Intellectual Property Law

Coleman & Horowitt has one of the premier intellectual property and technology law practices in California. The firm provides a wide range of services for the protection of the intellectual property of our clients. We have expertise in technology law, online defamation, defense, and Section 230 matters, start ups, and other issues facing start-ups.

Tuesday, April 30, 2019

Cybersquatting is when a third party registers a domain name that really should be yours. For example, if my company's name is "Fresno Widgets" and I register fresnowidgets.com, I would be very unhappy to learn that a competitor or a prankster (or, most likely, somebody who wants to sell the names back to you at 100 times their cost) has registered fresnowidgets.org and fresnowidgets.net.

This used to be a substantial problem. However, two things have mitigated this problem, and they both require that you obtain a trademark on your company's name.

The first is 15 U.S.C. § 1125(d), which provides that in cases of bad faith cybersquatting on a trademarked name, damages can be obtained (up to $100,000 in statutory damages is available in the event that you cannot prove that much in actual damages). Of course, the United States had strong free speech protection, and to the extent that the First Amendment continues to hold judicial sway, there is a free speech defense to such cases. For example, if I register "NRApoliciesKILL.com" or "NRApoliciesRULE.com", and proceed to post a bunch of my opinions on gun control, no amount of trademark protection will overrule my right to express my opinions. So fresnowidgetssucks.com is unlikely to trigger liability under the statute.

The second is the Uniform Domain Name Dispute Resolution Policy. Under this policy, the owner of a trademark can strike back at cybersquatters without going to court. There is an expedited administrative procedure that can give ownership of domain names to a trademark holder in months.

Coleman & Horowitt attorneys have experience with domain name issues, and would be happy to help. Perhaps more importantly, Coleman & Horowitt can help you get a registered trademark for your company's name, dramatically improving your chances of recovering domain name variants. This way, if you own fresnowidgets.com, you can gain control of fresnowidgets.org and fresnowidgets.net from your non-trademark-protected competitor.

Tuesday, March 12, 2019

It is important to remember that a patent does not give anybody the right to do what the patent covers. For example, if I had a patent on a more effective delivery system for MDMA or LSD, having a patent doesn't change the fact that those drugs are considered Schedule 1 and illegal under almost every circumstance -- meaning that my delivery system couldn't be used even though I had a patent on it.

While a patent doesn't give the patentee the right to practice the invention, it does give them the right to sue people to stop them from using the invention (or to recover financial damages). The expiration of a patent simply means that the owner of that patent can no longer sue anybody for using the inventions claimed in the patent.

Those things together mean that the impact of expiration of a patent on the ability to freely copy what was patented is limited. Taking the game "monopoly" as an example, the game was initially covered by a patent, by copyright, and by trademark law (though it does seem likely that recent Supreme Court decisions may have rendered that game not patentable today). When the patent expired, the copyright and trademark in the game remained in place. So while a company could sell a game with the same game-play mechanics that were claimed in the patent without fear of being sued for infringing the patent, that company could still be sued if they violate the copyright to the game or call it "Monopoly".

The bottom line is that the expiration of a patent simply means that the patent is no longer in play (sometimes subject to revival for unintentional or unavoidable delay in paying maintenance fees). However, there are other intellectual property rights (copyright, trade secret, trademark, trade dress, state-level trademarks, rights of publicity, etc.) that can give rise to significant liability. The expiration of the patent will not impact those other rights. The mere expiration of a patent does not mean that anybody can freely practice everything in the patent until they are satisfied (preferably by a lawyer's opinion letter) that what they intend to do is (a) legal, and (b) does not violate any other IP rights.

The other thing about patents is that it is common for a single patent application to result in numerous patents. There is even a thing called a "terminal disclaimer" that is used when a second patent claims something not significantly different than the first patent. Because patent maintenance fees are expensive, infrequently a patent owner will allow one patent to go expired for non-payment of fees, counting on other patents in the family to cover the same material. You'll want to go to https://portal.uspto.gov/pair/PublicPair and look up the expired patent. First, make sure it is really expired. Second, check the "continuity" tab and see if there are other patents still in force (or pending applications) in that patent family.

Perhaps most importantly, you need to seek proper legal advice. A good IP lawyer should be able to walk you through it. It is tough to provide a firm answer in the abstract, and the facts specific to what you want to do will be critical in having a lawyer give you the right answer.

Although an author
automatically gains copyright protection for her work immediately upon the
work’s creation, an author may not file an infringement action in court until
“registration of the copyright has been made” in accordance with the Copyright
Act. The Supreme Court was recently called upon to resolve a split amongst the
circuit courts regarding when registration of a copyright is deemed made.

Some circuits held that a registration of a copyright is
made as soon as the claimant delivers the required application, copies of the
work, and fee to the Copyright Office; other circuits held that registration is
made only after the Copyright Office reviews and registers the copyright. The
Supreme Court in Fourth Estate v.
Wall-Street.com,LLC resolved the split by holding that registration occurs,
and a copyright claimant may commence an infringement suit, when the Copyright
Office registers a copyright. The Court further held that, upon registration of
the copyright, however, a copyright owner can recover for infringement that
occurred both before and after registration.

Fourth Estate Public Benefit Corporation is an online news
producer that licensed articles to Wall-Street.com, LLC, a news website. The
license agreement required Wall-Street to remove from its website all content
produced by Fourth Estate before canceling the agreement. Wall-Street canceled,
but continued to display articles produced by Fourth Estate. Fourth Estate sued
Wall-Street and its owner for copyright infringement. Because the Copyright
Office had not yet acted on Fourth Estate’s registration applications, the
District Court, on Wall-Street’s motion, dismissed the complaint. The Eleventh
Circuit affirmed the dismissal.

The Supreme Court’s ruling of course has no effect on the
statutory scheme that allows for preregistration infringement suits to be filed
in limited circumstances. Claimants are still allowed to bring suits under
those statutes, provided that they eventually make registration as required to
maintain their suits.

The Court’s ruling in Fourth Street means that many copyright
suits currently in progress are not ripe for adjudication and can likely be
dismissed on motion. It is also important to note that, while the Court’s
ruling allows claimants to sue for infringement occurring prior to
registration, nothing provides for the tolling of the statute of limitations
while the Copyright Office processes registration. With a three-year statute of
limitations for copyright infringement, and an average application processing
time of seven months, parties should not delay in getting their applications on
file. Authored by:Brandon Hamparzoomian

Wednesday, February 27, 2019

In Helsinn Healthcare v. Teva Pharmaceuticals USA, the
Court affirmed a Federal Circuit decision invalidating the patent for Helsinn=s nausea drug Aloxi, based on patent
law=s Aon
sale@
bar. In short, the Court found that the
sale of an invention to a third party who is obligated to keep the invention
confidential by agreement may place the invention “on sale” for purposes of the
Leahy‑Smith America Invents Act (AAIA@), which bars a person from obtaining a
patent on an invention that was Ain
public use, on sale, or otherwise available to the public before the effective
filing date of the claimed invention.@An exception to the on sale bar is made if a sale or offer to sell is
made 1 year or less before the effective filing date of a claimed invention,
and certain other conditions are met.

The facts of the case are as follows. While Helsinn was in development of a drug,
which uses the active ingredient palonosetron to treat chemotherapy‑induced
nausea and vomiting, it entered into two agreements with a third party, MGI
Pharma, Inc., a license and supply and purchase agreement. These agreements gave MGI the right to
distribute, promote, market and sell two specific dosages of the palonosetron
in the United States. In exchange, MGI
made up-front payments to Helsinn and agreed to future royalties on
distribution. Most importantly, the agreements
required MGI to keep confidential any proprietary information regarding
palonosetron. The agreements were
disclosed to the public in a joint press release and related filings with the
SEC, but the specific dosage formulations covered by the agreements were not included
in the disclosure.

On January 30, 2003, nearly two years later, Helsinn filed a
patent application covering the two doses of palonosetron. Over the next 10 years, it filed additional
patent applications, all claiming priority to the January 30, 2003 date. Years later, Teva Pharmaceuticals sought FDA
approval to market a generic palonosetron at one of Helsinn=s dosages. Helsinn brought suit claiming the product
infringed its patent. Teva argued that
the fourth patent was invalid because the specific dose was Aon sale@
more than one year before Helsinn filed its initial patent application in
2003. The District Court held that the “on
sale” provision did not apply because the public disclosure of the agreements
did not disclose the specific dosages.
The Federal Circuit court, however, reversed, and concluded that the
sale was publicly disclosed, regardless of whether the details of the invention
were publicly disclosed in the terms of the agreements.

In a unanimous ruling, SCOTUS found
that an inventor=s commercial
sale of an invention to a third party invalidates the patent, even if the third
party is obligated to keep the invention confidential due to the “on sale”
bar. The Court recognized that the
pre-AIA statute included the “on sale” bar and noted the precedent that secret
sales could invalidate a parent. It then
applied the presumption that Congress intended the same with the AIA, which
includes the same “on sale” language.
Further, the Court found that the addition of the catchall phrase “or
otherwise available to the public” is not enough of a change from the pre-AIA
statute to conclude that Congress intended to alter the meaning of “on sale.”

The practical application and effect of this ruling is
interesting to note. On the one hand, a
modest inventor can argue that upholding the Federal Circuit=s decision would discourage innovation
in the biotech sector, particularly among small or start-up companies who lack
resources to have their drugs developed and distributed in-house, as they
frequently rely on third party investment and partnerships which can help with costs
of further research and development. Third party investments and partnerships,
however, subjects them to the “on sale” bar and can discourage them from engaging
in time-consuming and costly research, because it causes them to lose the
ability to receive patent protection. Also,
being forced to file costly patent applications for the sole purpose of
avoiding future patentability issues will further discourage small businesses
from entering the industry, especially when their invention has not been tested
to be commercially viable.

On the other side, competitors can argue that the Aon sale@
bar is triggered only when the invention is at a stage when it is ready for
patenting and sale, or when the inventor is ready to start making profits
before patenting it, and thus, the Aon
sale@
restriction is appropriate. Further, a
one-year grace period provided in the AIA is sufficient in which to assess commercial
viability.

In any event, all inventors
should be aware of the fact that this decision has vast implications for
patent-holders in the United States as well as for investors intending to sell
their invention pre-patent application.

Tuesday, February 19, 2019

Coleman & Horowitt is a
proud sponsor of Valley Innovators, a company dedicated to the advancement of
knowledge, mentorship and development of capital for startups. As part of our
sponsorship, attorneys from Coleman & Horowitt participate in podcasts, to
provide useful information to entrepreneurs and start-up companies. Gary
Shuster, an inventor and Coleman & Horowitt attorney who offers consulting
services to entrepreneurs and start-up companies, was recently featured on a Valley
Innovators Podcast where he discussed common mistakes inventors make with their
patent attorneys.

Thursday, February 14, 2019

Have you ever uploaded an image from the internet and used it in your promotional brochure or found a perfect blog post and incorporated it into your own blog theme? If the answer is yes, you may have inadvertently violated copyright law.

Copyright law, in a nutshell, protects any original creation, such as pictures, writings, creative efforts (dramatic, musical or choreographic works), computer software, architecture, etc., as well as any derivative work based on the original creation, by allowing the holder of the copyright exclusive control over who can reproduce, sell, disseminate or perform the protected work. Names, phrases or slogans, facts, ideas, procedures and processes, etc., cannot receive copyright protection.

Below are some tips that can help protect your start-up or existing business from the hassle and expense of a copyright infringement lawsuit:

1. Do not take pictures or videos directly from the internet and use them for any purpose. Just because a colorful, geometric design found through an internet search that would be perfect for your website lacks distinguishing copyright marks, does not mean it is in the public domain. In fact, most images, pictures and/or videos on the internet are copyright protected.

2. If you find a photo, art or video that you want to use on your website or printed materials, consider contacting the author and inquire whether you can use the work. Many authors will permit you to post their picture or work with the stipulation that you reference the work’s origination.

3. If you find something written on the internet that would be of good use in your promotional material, make sure to only take the general idea of the post and make sure you put the writing into your own words.4. Using someone’s work and providing a link back to the originator without express permission is still copyright infringement. Implied permission is not sufficient so never assume permission has been given.

5. Unless the work or image is expressly dedicated to the public domain, do not use it unless you obtain the owner’s permission.

Some electronic images may contain electronic “tags” that allow owners to track use of their copyright images. The owners of the images (or their attorneys) may then send a “cease and desist” letter to unauthorized users, demanding past and future licensing fees, and threatening litigation if the fees are not paid. Unsuspecting small business owners who have downloaded images, believing them to be for public use, are often caught off-guard and incur expenses for which they have not budgeted and which may significantly impact their businesses. Therefore, the guiding principal is, when in doubt, do not download.

If you receive a cease and desist letter for using an image or work that is purported to be copyright protected, contact an IP attorney to help you understand how best to proceed. This will help you avoid costly litigation fees in defending the lawsuit from an overzealous plaintiff.